DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions. For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,066,089 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Formality Requirements
Applicant’s response filed on February 17, 2025 has been received. The claim listing includes a total of 23 claims, 1-18 of which are original and 19-23 of which are new. MPEP 1453 and 37 CFR 1.173(d) pertains to amendments in reissue applications. Any changes relative to the patent must include markings wherein matter to be omitted by reissue must be enclosed in brackets and matter to be added by reissue must be underlined. Accordingly, NEW claims 19-23 should be underlined in their entirety. Appropriate correction is required in response to this office action.
Applicant’s method claims 16-18 and 22-23 use numbers with parenthesis (i.e. 1), 2), 3) etc.) to indicate the method steps. While nothing in the rules preclude Applicant from labelling steps in this manner, the numbers make reading of the claims difficult given that such numbering appears to indicate subsequent claims not presented in numerical order. The Examiner suggests using letters (i.e. a., b., c.,) or Roman numerals (i., ii., iii.) for improved ease of reading.
Maintenance Fees
Applicant is reminded the 3.5 year maintenance fee is currently due. The payment window opened on September 13, 2025, the surcharge begins/began on March 14, 2026 and the last day to pay is September 14, 2026. The reissue will not publish if the maintenance fee is not paid before the payment period expires.
Claim Rejections - 35 USC § 251 - Recapture
Claims 19-23 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Reissue claims 19 and 22 are broader in scope than patent claims 1 and 16. Reissue claims 19 and 22 do not require the following limitations which were present in all of the patent claims:
the upper frame and the lower frame are each telescopically adjustable along each respective longitudinal axis between an extended utility length and a retracted storage length.
Therefore, step 1 of the three-step test is met for reissue claims 19-23
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the application for the ‘457 patent, the Examiner rejected claims 1-9 and 11-16 over art and indicated claim 10 as including allowable subject matter in a non-final office action mailed on July 15, 2022. An Applicant initiated Interview was conducted on July 27, 2022 indicating that agreement was reached on an Examiner’s amendment placing the case in condition for allowance. The Examiner’s amendment involved incorporating the subject matter of claim 12, previously rejection over art, into independent claims 1 and 17.
On July 27, 2022 the case was an allowed with and Examiner’s amendment to independent claims 1 and 17.
Independent claim 1 was amended to include the following limitation:
“wherein the upper frame and the lower frame are each telescopically adjustable along each respective longitudinal axis between an extended utility length and a retracted storage length.”
Claim 17 was rewritten in independent form to include all the limitations of the base claim 1 in addition to the limitation:
“wherein the upper frame and the lower frame are each telescopically adjustable along each respective longitudinal axis between an extended utility length and a retracted storage length.”
The limitations that were added to independent claims 1 and 17, listed above, to distinguish the claimed invention from the prior art are thus surrender-generating limitations (SGL).1
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claim 19 is broadened with respect to patent claim 1 to omit:
“wherein the upper frame and the lower frame are each telescopically adjustable along each respective longitudinal axis between an extended utility length and a retracted storage length.”
Reissue claim 22 is broadened with respect to patent claim 16 to omit:
“wherein the upper frame and the lower frame are each telescopically adjustable along each respective longitudinal axis between an extended utility length and a retracted storage length.”
The omission is an omission of the surrender generating limitations. Therefore, step 2 of the three-part test is met for reissue claimed 19-23
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated that to avoid the recapture rule "the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured." Id. at 1361, 98 USPQ2d at 1644.
Reissue claims 19-23 are narrowed by requiring “each of the at least one lift rack has two arms extending from the base; wherein the two arms of each of the at least one lift rack define a width between the arms and wherein the rack is telescopically adjustable to adjust the width.” These narrowing limitations do not results in claims that are “ materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.”
Therefore, reissue claims 19-23 improperly recapture surrendered subject matter.
35 USC 251 – Error Statement
The rejection of claims 1-18 as being based upon a defective reissue declaration under 37 USC 251 is withdrawn. The filing of Applicant’s amended claim set, including newly added claims 19-23, results in the originally filed error statement submitted in the Reissue Application Declaration on September 4, 2024 sufficient. In accordance with MPEP 1414 II. (B) the error statement “identify the claim being broadened and a single word, phrase or expression in the specification or in an original claim and how it renders the original patent wholly or partly inoperative."
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 19-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 recites “the rack” in the last line of the claim. It is not clear if this recitation is referring to the “roof rack of the vehicle” as recited in the preamble of the claim or the “at least one lift rack” recited in line 8. Clarification is required.
Claim 19 recites “the base” in line 11. This phrase lacks sufficient antecedent basis.
Similarly, claim 22 also recites “the rack” in the line 13. It is not clear if this recitation is referring to the “roof rack of the vehicle” as recited in the preamble of the claim or the “at least one lift rack” recited in line 8. Clarification is required.
Claims not specifically addressed are rejected as being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4, 8-10, 12, 14, 16-20 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (5,123,665) in view of Hart Jr. (5,016,893). With respect to claim 1, Levy discloses a lift, capable of raising and lowering a boat to load and unload the boat onto a roof or a roof rack on a vehicle, wherein the lift comprises: an upper frame (12) having a longitudinal axis, a lower frame (10) having a longitudinal axis, a linkage (14)(16)(18)(20) connecting the upper frame (12) to the lower frame (10), wherein in a first position the linkage is extended (see Figure 3A) and the lift is raised and in a second position (Figure 3B) the linkage is retracted and the lift is lowered; the upper frame (12) and the lower frame (10) are each telescopically adjustable via sleeve segments (58) along each respective longitudinal axis between an extended utility length (aww Figure 3A) and a retracted storage length (see Figure 3B). Levy fails to disclose at least one lift rack extending from or part of the upper frame and adapted to support a boat such that in the linkage first position the boat may be slit in a longitudinal direction.
Hart, Jr. teaches a collapsible support and transport stand comprising an upper frame element (15)(16)(17)(18)(19)(20). At least one lift rack (18)(19) is part of the upper frame element. The rack is adapted to support a boat (11) thereon and to enable the boat (11) to slide in a longitudinal direction from the support element onto an adjacent vehicle. Regarding limitations of claims 8-10 and 19-20, the at least one lift rack (18)(19) is open in an upward direction and the at least one lift rack (18)(19) comprises a first rack (18) with two arms (49)(47) extending from a base (43)(45) to define a width, wherein the width is adjustable by way of telescoping members (43) and (45) of the base (43)(45).
It would have been obvious to a person of ordinary skill in the art at the time of filing of the Levy application to add rack elements (18) and (19), since such a provision would enable a user to store items within the bag (38) carried by the carrier and additional items on top of the carrier. The addition of rack elements (18) and (19) would have provided the expected result of additional storage capacity for the Levy lift carrier.
With respect to claim 2, Levy does not explicitly disclose a partially extended position such that at least one lift rack is approximately 2’ from the ground. Levy does, however, disclose a handle (22) that would imply that in the extended position shown in Figure 1, the handle is at a comfortable hand height for a user. Therefore, a PHOSITA would understand that the structure is capable of being configured in a partially extended position of approximately 2 feet above the ground.
With respect to claim 3, in the retracted position the lift may be stored or the lift may be transported.
With respect to claim 4, the linkage is a scissor arrangement as shown in Figure 1.
With respect to claim 12, Levy does not explicitly disclose a size of the lift or a retracted storage length (see Figure 3B) of 4’. It would have been an obvious matter of design choice to design the lift such that the retracted storage length is approximately 4’ since such a modification would have involved a mere specification of side. Modifying the size of a device based upon the end use of said device requires only routine skill in the art and routine experimentation. Changes in size are obvious to a PHOSITA.
With respect to claim 14, wheels are attached to the lower frame (10) to support the lift.
With respect to claims 16-18 and 22-23, Levy fails to disclose the method steps positioning the boat on the lift, extending the lift to the extended position and sliding the boat from the lift to a roof rack. Hart teaches using a lift mechanism to position a boat with respect to a truck bed, and sliding the boat onto the truck bed. The step of positioning the lift mechanism with respect to a vehicle roof and/or roof rack would have been an obvious use of the Levy system, as modified by Hart, to a PHOSITA. The concept longitudinally moving a boat into position on a roof rack is known in the art and by boaters and requires only routine skill in the art. Such a method being well known in the art is evidenced by McAnoy (US 2012/0301265) and Christensen (5,904,463).
Claim(s) 1-4, 8-12 ,14 and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (5,123,665) in view of Nichols, II (5,961,139). With respect to claim 1 and 19, Levy discloses a lift, capable of raising and lower a boat to load and unload the boat onto a roof or a roof rack on a vehicle, wherein the lift comprises: an upper frame (12) having a longitudinal axis, a lower frame (10) having a longitudinal axis, a linkage (14)(16)(18)(20) connecting the upper frame (12) to the lower frame (10), wherein in a first position the linkage is extended (see Figure 3A) and the lift is raised and in a second position (Figure 3B) the linkage is retracted and the lift is lowered; the upper frame (12) and the lower frame (10) are each telescopically adjustable via sleeve segments (58) along each respective longitudinal axis between an extended utility length (aww Figure 3A) and a retracted storage length (see Figure 3B). Levy fails to disclose at least one lift rack extending from or part of the upper frame and adapted to support a boat such that in the linkage first position the boat may be slit in a longitudinal direction.
Nichols teaches a wheeled support cart with lift rack (70)(72) extending from an upper frame elements (18) and (20), wherein the lift rack (70)(72) is configured to support a boat thereon and the boat can be slid onto and out of the rack longitudinally. With respect to claims 8-10 and 19-20, the lift rack (70)(72) is open in an upward direction and has two arms (70) and (72) extending from a base (30)(46). The base is telescopically adjustable via pins (42)(56) and the arms pivot about axis (112).
It would have been obvious to a person of ordinary skill in the art at the time of filing of the Levy application to add lift rack (70)(72), since such a provision would enable a user to store items within the bag (38) carried by the carrier and additional items on top of the carrier. The addition of rack elements (70)(72) would have provided the expected result of additional storage capacity for the Levy lift carrier.
With respect to claim 2, Levy does not explicitly disclose a partially extended position such that at least one lift rack is approximately 2’ from the ground. Levy does, however, disclose a handle (22) that would imply that in the extended position shown in Figure 1, the handle is at a comfortable hand height for a user. Therefore, a PHOSITA would understand that the structure is capable of being configured in a partially extended position of approximately 2 feet above the ground.
With respect to claim 3, in the retracted position the lift may be stored or the lift may be transported.
With respect to claim 4, the linkage is a scissor arrangement as shown in Figure 1.
With respect to claim 12, Levy does not explicitly disclose a size of the lift or a retracted storage length (see Figure 3B) of 4’. It would have been an obvious matter of design choice to design the lift such that the retracted storage length is approximately 4’ since such a modification would have involved a mere specification of side. Modifying the size of a device based upon the end use of said device requires only routine skill in the art and routine experimentation. Changes in size are obvious to a PHOSITA.
With respect to claim 14, wheels are attached to the lower frame (10) to support the lift.
Claim(s) 5-7, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (5,123,665) in view of Hart Jr. (5,016,893), as applied to claim 1 above, and further in view of Myers et al. (6,431,319). Levy, as modified by Hart, discloses all claimed elements with the exception of a lower frame and linkage made of aluminum and locks to prevent wheel rotation.
Myers et al. teaches a height adjustable equipment cart with an aluminum undercarriage (column 3, lines14-15) and wheel locks (86). A screw mechanism (62) is used to extend the scissor lift (16) and is powered by a crank (70) or a motor (72). Terminals (48) slide within an upper frame and terminals (52) slide within the lower frame.
It would have been obvious to a PHOSITA to use the aluminum material taught by Myers to form the linkage and lower frame disclosed by Levy, as modified, since such a material is sturdy yet light weight and would enable a system made therefrom to be handled by a single person while supporting a relatively heavy load (see column 3, lines 15-18). It would have been further obvious to a PHOSITA to add wheel locks (86) the wheels (30)(30) of Levy, as modified, since such an addition improves the safety of operation of the Levy system.
Levy discloses his system can be operated by a power mechanism that extends the scissor supports by moving telescopic portions of the frame apart. It would have been obvious to replace the power mechanism disclosed by Levy with a scissor mounted power screw taught by Myers et al. since the use of one actuation mechanism in place of the other would appear to achieve the same lifting result and a substitution of one mechanism for another would require only routine experimentation. The power screw taught by Meyers acts directly on the scissor links, avoiding strain being placed on the frame elements themselves as is the case with the frame mounted power source disclosed by Levy.
Claim(s) 5-7, 13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Levy (5,123,665) in view of in view of Nichols, II (5,961,139) as applied to claim 1 above, and further in view of Myers et al. (6,431,319). Levy, as modified by Hart, discloses all claimed elements with the exception of a lower frame and linkage made of aluminum and locks to prevent wheel rotation.
Myers et al. teaches a height adjustable equipment cart with an aluminum undercarriage (column 3, lines14-15) and wheel locks (86). A screw mechanism (62) is used to extend the scissor lift (16) and is powered by a crank (70) or a motor (72). Terminals (48) slide within an upper frame and terminals (52) slide within the lower frame.
It would have been obvious to a PHOSITA to use the aluminum material taught by Myers to form the linkage and lower frame disclosed by Levy, as modified, since such a material is sturdy yet light weight and would enable a system made therefrom to be handled by a single person while supporting a relatively heavy load (see column 3, lines 15-18). It would have been further obvious to a PHOSITA to add wheel locks (86) the wheels (30)(30) of Levy, as modified, since such an addition improves the safety of operation of the Levy system.
Levy discloses his system can be operated by a power mechanism that extends the scissor supports by moving telescopic portions of the frame apart. It would have been obvious to replace the power mechanism disclosed by Levy with a scissor mounted power screw taught by Myers et al. since the use of one actuation mechanism in place of the other would appear to achieve the same lifting result and a substitution of one mechanism for another would require only routine experimentation. The power screw taught by Meyers acts directly on the scissor links, avoiding strain being placed on the frame elements themselves as is the case with the frame mounted power source disclosed by Levy.
Response to Amendment/Arguments
Applicant’s amendment and response filed on February 17, 2026 has been fully considered.
As noted above, changes made in a reissue application must be made in accordance with 37 CFR 1.153(d). Specifically, the new claims submitted should be underlined in their entirety reflecting changes made with respect to the underlying patent. Appropriate correction is subsequent responses is required.
Applicant’s newly filed claim set, which includes claims 19-23, makes the 251 rejection of claims 1-18 in light of an improper error statement moot.
Applicant argues that Levy is non-analogous art which cannot be properly applied in an obviousness rejection. The Examiner respectfully disagrees. Levy is concerned with transport of items via a wheeled implement for ease of the user. For this reason, the examiner contends the Levy is reasonably pertinent to the problem being faced by the inventor. The Examiner recognizes that inventor is looking to solve a problem of transporting a boat. However the magnitude of the load carried by the wheeled implement does not preclude the teachings of that implement from being pertinent to the wheeled transport of a larger load.
Applicant further argues that a person having ordinary skill in the art (PHOSITA) would not have considered adding a lift rack of Hart of Nichols to the carrier of Levy. Applicant states that Levy is not designed to lift or carry a boat. The term “boat” can be very broadly interpreted from a size standpoint and can range from a model boat, to a row boat/canoe/kayak, even an inflatable boat. The Examiner contends that under the broadest reasonable interpretation of the claim language Levy is configured to carry a boat therein or thereon. Applicant further argues that inclusion of a rack as taught by Hart or Nichols on the Levy carrier would likely block items from being inserted therein thereby destroying the purpose for which the carrier is built. The Examiner contends that the carrier is indeed built for carrying contents therein. The addition of a lift rack would expand the carrying capacity of the carrier to carry contents thereon. The blockage of access to the inside of the carrier presumes a user would load the lift rack first and block the compartment. The device could equally well be used in an order which the compartment is loaded first and then contends are loaded on top the lift rack. The Examiner contends that the concept of expanding carrying capacity as a whole is motivation enough to a PHOSITA to add a lift rack as taught by Hart or Nichols to the carrier of Levy. The fact that a user would have to choose what order to load the modified carrier does not preclude the teachings from be pertinent and obvious to try with an expectation of expanded carrying capacity.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH B. MCPARTLIN whose telephone number is (571)272-6854. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 The examiner notes that limitations added to original application claims for the purpose of making the claims allowable over an art rejection are surrender-generating limitations, whether the amendment was made by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant, even when applicant has made no argument on the record that the limitations were added to obviate the rejection. See MPEP § 1412.02, subsection II.B.2(B).
